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The concurrence endeavors to make two points: “First, subject matter eligibility under 35 U.S.C. § 101 is a pure question of law, one that can, and should, be resolved at the earliest stages of litigation. Second, claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”

No Dice

According to the applicant, the patent application is directed to “dice games intended to be played in gambling casinos, in which a participant attempts to achieve a particular winning combination of subsets of the dice.”

The applicant told the Federal Circuit that “the primary novelty of the claimed invention is the markings (or lack thereof) on the dice, which have only particular faces marked.” But according to the Federal Circuit, this makes the claims patent ineligible based on the “highly instructive” case of In re Smith, 815 F.3d 816 (Fed. Cir. 2016).

The Federal Circuit then discussed how the claims at issue also fail to recite non-conventional elements at the second step of the Alice inquiry, ultimately holding the claims to be patent-ineligible while noting that the only arguably non-conventional elements are nothing more than mere patent-ineligible printed matter because those additional elements are informational dice markings that do not have a patent-eligible function.

The Mayer Concurrence Examined

Not much of a shocker there, but what is more notable than anything is Judge Mayer’s concurrence, given how it exposes his views on patent eligibility. The concurrence endeavors to make two points: “First, subject matter eligibility under 35 U.S.C. § 101 is a pure question of law, one that can, and should, be resolved at the earliest stages of litigation. Second, claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”

As to his first point, Judge Mayer apparently believes the decision in Berkheimer v. HP Inc., 890 F.3d 1369 (Fed. Cir. 2018) is bad law. Judge Mayer begins by quoting Judge Reyna’s dissent in Berkheimer, where Judge Reyna observed that “[p]erhaps the single most consistent factor in this court’s § 101 law has been our precedent that the § 101 inquiry is a question of law. Stated differently, there is no precedent that the § 101 inquiry is a question of fact.”

Judge Mayer then goes on to state that “[p]anels of this court…are without authority to disregard established precedent” and subsequently references Alice,Myriad, Mayo, and Bilski when indicating that “[t]ellingly, the Supreme Court has taken up four subject matter eligibility challenges in recent years, but has never once suggested that the section 101 calculus includes any factual determinations…To the contrary, the Court has uniformly treated subject matter eligibility as a question of law.”

Thereafter, Judge Mayer discusses how questions of law are often resolved using dictionaries “and other publically available sources,” even invoking Justice Scalia’s majority opinion in the Supreme Court’s Second Amendment case of District of Columbia v. Heller, 554 U.S. 570 (2008). In that decision, Judge Mayer notes, the late Justice ascertained the meaning of the phrase “keep and bear Arms” using a dictionary from the founding period.

But two points on that. First, at least Justice Scalia managed to put his hands on some evidence when resolving a question of law. This is in contrast to many abstract idea opinions in, for instance, the software arts, where no evidence is cited in support of an apparently self-justifying statement that a claim essentially embodies an allegedly preexisting practice that has simply been automated.

Second, despite him joining the majority in Alice, Justice Scalia would caution the courts to actually follow the letter of the law set forth in the statute since he was a “textualist” first and foremost and an “originalist” only when the text of a statute was ambiguous. This is in contrast to abstract idea jurisprudence, which essentially involves ignoring the test set forth in the statute by only briefly acknowledging it at the beginning of a patent-eligibility analysis and then engaging in a much more comprehensive yet abuse-prone two-step abstract idea test that was never codified.

Next, Judge Mayer praises the Supreme Court as stepping in to “resuscitate” Section 101 to address “a scourge of meritless infringement suits” that “clogged the courtrooms and exacted a heavy tax on scientific innovation and technological change.” He then states that “[i]njecting factual inquiries into the section 101 calculus will topple the Mayo/Alice framework and return us to the era when the patent system stifled rather than ‘promote[d] the Progress of Science and useful Arts,’” apparently unaware of how abstract idea case law has stifled the legitimate inventions of patentees from the Patent Office all the way through the courts.

But, according to Judge Mayer, because Berkheimer made the Section 101 framework “so cumbersome and time-consuming that it will cease to function as an expeditious tool for weeding out patents clearly lacking any ‘inventive concept’…section 101 will no longer be a ‘threshold test’”. So apparently the “threshold test” dicta from Bilski was not meant in the sense of Section 101 being a cursory test for patent-eligibility, but instead in the sense of it being a comprehensive test resolved by judges rather than juries.

The concurrence then concludes by alleging that “Alice, for all intents and purposes, articulated a ‘technological arts’ test for patent eligibility.” But again, note how the statute itself intimates no such test: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

As you can see, the term “any” is pretty unequivocal in Section 101. The statute certainly does not hint at the sort of “technological arts” test that Judge Mayer would prefer and that Alice itself never required, despite Judge Mayer purportedly being concerned with precedent.

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The Author

John M. Rogitz
is a registered patent attorney with his own practice in San Diego, CA. His background includes preparation and prosecution of a large number of patent applications for high-tech Fortune 500 companies in a wide range of technologies. John has also been active on behalf of his clients in the acquisition of patent portfolios. He writes frequently for various publications on developments in patent law and also lectures on intellectual property for DeVry University. Previously, John was engaged in civil litigation at the Watkins Firm, a San Diego-based law firm. Prior to that, he worked as a web developer for Loyola Marymount University. John received his J.D. in 2009 from California Western School of Law.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

When I think of Mayer, I think of a diagram of a Brontosaur showing the remarkably tiny brain of such the extinct creature.

JLHJanuary 11, 2019 2:01 pm

Am I the only one that thinks the title of this article should have been “Alice in Candyland”?

In all seriousness, excellent analysis here.

Eric BerendJanuary 12, 2019 1:20 pm

It seems “great minds think alike”. Even as this article was being written, I had posted a similar observation in a comment to different article from the other day, here at IPWatchdog.com:

”Eric Berend January 11, 2019 6:14 am

Let us not whistle past the graveyard.

‘According to Judge Mayer, “[i]njecting factual inquiries into the section 101 calculus will topple the Mayo/Alice framework and return us to the era when the patent system stifled rather than ‘promote[d] the Progress of Science and useful Arts,’ U.S. Const. art. I, § 8, cl. 8.” ‘.

These idiots actually profess to believe this nonsense. U.S. inventors are not merely dismayed by the rampant betrayal of the very Constitutional imperative cited by the patent-hating antagonist Mayer – we are outraged, furious, and now deeply despise the whole U.S. patent system with a loathing the intensity of which is quite difficult to describe.

When sham sycophants resembling black-robed judges in the CAFC ride shotgun for IP-pirates, destroying inventors’ Constitutional opportunities, it promotes and sustains an apparatus of unconscionable inequity of bargaining power between inventors and infringers.

What a shell game. The tone-deaf obdurate adherence by a U.S. Appellate Court Judge to a criminal racket fostered by years of illicit infringer-friendly influences, offers nothing more than an immense stench of a conceited sham. Any inventor with any notion of dignity and self-respect, has to suppress the impulse to vomit, in response. After all, when diarrhea is what comes out of a Judge’s mouth, the reaction is difficult to suppress.

So long as treacherous agents of criminal conspirators such as “Judge” Mayer exist and preside over the future of U.S. inventors’ fortunes, the American inventor is dead. and there will NEVER be justice in U.S. patent law.

My lighting and power inventions will go to the grave with me. ANY other outcome, in unconscionable. The judge-legislator-attorney overclass considers this to be a small price to pay, destroying the economic motivation for inventors to participate in creating technology to benefit the U.S., now and in the future.

China will teach you all, how very foolish you in the legal community of U.S. patent law, truly are. Aside from Mr. Gene Quinn, Judge Rader, Director Iancu and others very much in the minority therein; this forum will not print the words to describe my opinion of you. In fact, such words may not exist – the magnitude of your treacherous evil begs adequate description in the English language. Perhaps Swahili, Sanskrit or Mandarin Chinese can come closer, in this sad regard. “

Eric BerendJanuary 12, 2019 1:57 pm

It should be no surprise that the judge-legislator-attorney overclass rushes to provide support and cover for their perceived peers: arbitrators.

Whereas, witness the derogatory treatment of those the selfsame overclass considers as being their inferiors: inventors.

Even, when such derogation flaunts the Constitution and undermines the public interest (e.g., “publick welfare”) with wanton disregard for over 200 years of distinctly American jurisprudence.

Even, when such actions are accompanied by manifest evidence of illicit influences:
1) from stacking Google’s agents in the administration of former President Obama, to
2) Google (and possibly, Apple) hand-picking appointees to the CAFC, to the
3) appointment of Google’s former chief counsel for IP as the Director of the USPTO, to the
4) elision and thereby, thede factoabrogation of, Federal Administrative Law standards as to bureaucratic equivalents of judges at the PTAB, to the
5) over $1,000,000,000 spent on ‘K Street’ lobbyists to illegally influence legislators of the U.S. Congress, to the
6) farce of controlled fora such as TED masquerading as open so-called “public” debate, to the
7) bribery of academia that produced such odious, favored sycophants as the notorious Professor Lemley, to the
8) immense PR campaign to publicly disparage and besmirch American Inventors as so-called “patent trolls”.

Given all of the above, it strains credulity to imagine this is not the product of an enormous criminal conspiracy against U.S. inventors, patentees and the public interest of the people of the United States of America.

TimJanuary 13, 2019 9:18 am

I will never forget what this former Army JAG Lawyer, “Mayer” did in a matter of minutes to toss the case “Vringo vs IP Internet” with his sidekick “Wallach”. And Former head of the US PTO, Judge Chen, who was the only qualified of the 3, with computer background, highly dissented the 2 idiots that backed GOOGLE, even after a 12-man jury unanimously found them guilty of infringement on “every single count”. And for some unforeseen reason, when Atty David Buies took the case to the US Supreme Court, the case wouldn’t be seen. Probably too many GOOGLE donations in the Obama Administration. Sickening how money and a few handshakes can corrupt!

BJanuary 14, 2019 6:27 pm

” when Atty David Buies took the case to the US Supreme Court . . . .”

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